Supply Guys, Inc.

Trademark Trial and Appeal Board

Mar 6, 2008

No. 77027099 (T.T.A.B. Mar. 6, 2008)

Mailed:
6 March 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Supply Guys, Inc.
________

Serial Nos. 77027094, 77027097, and 77027099
_______

Richard H. Kosakowski of O’Shea, Getz & Kosakowski, P.C.
for Supply Guys, Inc.

Mary Boagni, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Drost, Zervas, and Wellington, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On October 23, 2006, Supply Guys, Inc. (applicant)
filed the following three applications to register the mark
LEADING EDGE TONERS in standard character form on the
Principal Register:
Serial No. 77027094
Class 2
Toner; Toner cartridges
“Toners” disclaimed

Serial No. 77027097
Class 16
Ink sticks
“Toners” disclaimed

Serial No. 77027099
THIS OPINION IS A
PRECEDENT OF THE TTAB
Ser. Nos. 77027094, 77027097, and 77027099

2
Class 9
Components for laser toner cartridges, namely,
replacement drums and rollers; printer parts, namely,
fusers, volt fusers, fuser rolls, transfer rollers,
transfer belts, transfer kits each consisting of a
transfer belt, a transfer roller and air filters, sold
as a unit, transfer units, paper trays, maintenance
kits each consisting of a fusing assembly, a transfer
roller, a tool for removing a transfer roller, a tray,
a pickup roller, feed rollers, and separation rollers,
sold as a unit, maintenance trays, drum maintenance
trays, drum maintenance kits each consisting of an
imaging drum cartridge, a large air filter, a small
air filter, and a hand wipe, sold as a unit, imaging
kits each consisting of replacement imaging units,
sold as a unit, imaging units, main charge grids, belt
cleaner assemblies, waste cartridges, waste trays
“Toners” disclaimed

Two applications (‘097 and ‘099) allege June 2, 2006,
as their dates of first use and first use in commerce. The
‘094 application alleges June 6, 2006, as its dates of
first use.
The examining attorney has refused registration on the
ground that applicant’s mark as shown on each specimen does
not function as a trademark for the identified goods and
that applicant has failed to submit “an acceptable
substitute specimen showing proper trademark use for the
goods specified in the application” with the appropriate
verified statement (Brief at 1). 15 U.S.C. §§ 1051, 1052
and 1127. We have set out the specimens from Serial No.
77027094. The first specimen is the substitute specimen.
The second is the original specimen.
Ser. Nos. 77027094, 77027097, and 77027099

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We add that the original specimen (the FedEx shipping
label) from the ‘094 application appears to be identical to
the specimens from the other two applications. The
Ser. Nos. 77027094, 77027097, and 77027099

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recipient is identified as Brian Zuckerman of 226 Russell
Street, Hadley, MA 01035. Coincidentally, Brian A.
Zuckerman is identified as applicant’s president and
applicant’s address in the application is identical to Mr.
Zuckerman’s address on the original specimen.
The substitute specimens in the three cases are
similar, although the center of the specimens display
different goods and the items listed under “Bestsellers”
are different.
Because the specimens and issues are so similar, we
have chosen to issue one opinion that addresses applicant’s
three applications.
Arguments
The examining attorney argues that the “original
specimen submitted by the applicant consists of a copy of a
shipping label depicting the mark in the return address.”
Brief at unnumbered p. 3.1 Furthermore, the examining
attorney contends that shipping labels are not acceptable
“if the mark as shown, as in this case, is merely used as a
trade name, and not as a trademark.” Brief at 6.
Regarding the substitute specimen, the examining
attorney argues that “despite the existence of any pictures

1 Unless otherwise specified, references to the record will be to
the record to the ‘094 application.
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or ordering information on the webpage, the mark is not
used in a manner that would identify the goods, but instead
appears to identify a retail website called LEADING EDGE
TONERS.” Brief at 11.
Applicant maintains that on the original specimens,
the mark “is used in a trademark sense on the original
specimen because the customers associate that mark with the
distinctive products they obtain thereunder. Therefore,
the mark does not solely function as a business name, if at
all.” Brief at 8.
For the substitute specimens, applicant points to six
locations (Reply Brief at 5-6) on the specimen2 where the
words LEADING EDGE TONERS appears:
Location 1: As part of the website address in the URL
line

Applicant argues that the “owner of a mark for goods
who sells those goods over the Internet and who uses its
trademark as part of the URL must necessarily use that mark
in a manner mandated by the rules of the Internet; for
example, www.microsoft.com.”
Location 2: In the top left hand corner where it
indicates “Leading Edge Toners Best Prices for
Tektronix Toners and Xerox Ink/Tektronix Phaser 560P”

2 Regarding two of the uses on the substitute specimen where the
mark is used with the copyright notice and with applicant’s phone
number, applicant assumed “without admitting” that the use was
solely as a trade name. Reply Brief at 5.
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Location 3: In the upper half on the left side where
it indicates “Leading Edge Toners™, where directly
underneath the word “edge” is a picture of a toner
cartridge and directly to the right is a picture of a
printer, while underneath the mark are the words “The
Price Leader for Xerox/Tektronix Toner.”

Applicant argues that there “is no rule or convention
that use of a mark on the top of a webpage is ordinarily in
a location where the name of the on-line retail or ordering
services [is] located.” Reply Brief at 9; see also p. 10.
“[I]t is submitted that the mark and the picture of the
goods are in sufficiently close proximity to allow one to
easily associate the mark with the goods.” Reply Brief at
10; see also p. 11.
Location 4: In the middle left side of the substitute
specimen where it indicates “Leading Edge Toners Best
Price for Tektronix Toners and Xerox Ink” and directly
below this, separated by only the words “High-Capacity
Toner” on one line and on another line below that the
words “Phaser 560/740 Media Sciences compatible…” is a
picture of a toner cartridge.

For this use, applicant argues that the use “is
relatively very close to a picture of the goods, so much so
that it allows one to easily associate the mark with the
goods.” Reply Brief at 13.
Discussion – Original Specimen
Regarding applicant’s FedEx shipping label, we agree
with the examining attorney that the label does not
demonstrate good trademark use. “The name of a business or
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company is a trade name and there is no provision in the
Trademark Act for registration of trade names which are
used solely as trade names. However, if a trade name is
used in such a manner that it also functions as a trademark
or service mark, it may be registrable.” In re Stewart
Sandwiches International, Inc., 220 USPQ 93, 94 (TTAB 1983)
(citations omitted). “The question of whether a name used
as a trade name… also performs the function of a trademark
and/or a service mark is one of fact and is determined from
the manner in which the name is used and the probable
impact thereof upon purchasers and prospective customers.”
In re Univar Corp., 20 USPQ2d 1865, 1866 (TTAB 1991).
In this case, the specimen only shows use of the term
LEADING EDGE TONERS in the “Ship From” section of the label
where it serves as a return address. The specimen does not
indicate that the term LEADING EDGE TONERS is used as a
trademark. See, e.g., In re Walker Process Equipment Inc.,
233 F.2d 329, 110 USPQ 41, 43 (CCPA 1956) (“[E]ach of the
specimens includes the words ‘Aurora Illinois’ or ‘Aurora
Ill. U.S.A.’ displayed in such a manner as to make it clear
they indicate the location of Walker Process Equipment
Inc.”); In re Lyndale Farm, 186 F.2d 723, 88 USPQ 377, 381-
82 (CCPA 1951) (“Furthermore, the inference is created by
the addition of the address ‘Floydada, Texas’ to the
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placard that the use here involved does not so much
distinguish appellant's cattle as it identifies appellant
as the source of the shipment while the crate and its
contents are in transit. That is trade name usage as
distinguished from trade mark usage. We think the denial
of registration of ‘Lyndale Farm’ on the principal register
because of failure to show trade mark usage is, on the
record before us, well founded”). As the CCPA has held:
“[T]he mere fact that appellant's goods are placed in bags
(bearing the words sought to be registered) during a
particular phase of the transportation process does not,
ipso facto, establish trademark usage of those words.” In
re The Pennsylvania Fashion Factory, Inc., 588 F.2d 1343,
200 USPQ 140, 142 (CCPA 1978). Applicant’s use of its
trade name on a shipping label similarly does not by itself
create trademark use. In re Reinforced Molding
Corporation, 152 USPQ 820, 821 (TTAB 1967) (“Since the
corporate name is being used with applicant's address and
in a subordinate manner, the immediate suggestion is that
it is not being used as a trademark”).
Even more so in this case, applicant’s term appears in
the return address of a shipping label where customers look
for the name of the individual, organization, or company
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that shipped the package. See In re Baker Industries,
Inc., 565 F.2d 1211, 196 USPQ 151, 151-52 (CCPA 1977):
During the prosecution, appellant presented specimens,
postal meter mailing tapes, which showed the actual
use of the words in commerce. The mailing tapes are
affixed to packages in which appellant’s goods are
mailed. The words, which appellant argues are in the
nature of a slogan, are used on the packages in
conjunction with appellant’s trade name, Baker
Industries… [W]e conclude that appellant’s slogan does
not identify and distinguish its goods in accordance
with the statutory definition of “trade-mark,” but,
rather, serves to distinguish appellant from other
companies having the name, Baker.

Applicant has not submitted evidence that convinces us that
customers would understand that the name in the return
address, which normally identifies the name of the entity
that shipped the contents of the package, functions in
applicant’s case also as a trademark for the unidentified
goods inside the package. Unlike the specimens in Univar,
20 USPQ2d at 1869, the original specimens here use the term
as the complete return address of applicant with no
distinctive stylization other than the use of uppercase
letters. Therefore, we agree with the examining attorney
that the original specimens do not demonstrate trademark
use for the goods in the three applications in this appeal.
Discussion - Substitute Specimen
The next question is whether the substitute specimens
show good trademark use. Unlike the original specimens,
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there are several uses of the term LEADING EDGE TONERS on
the substitute specimens. The Trademark Act § 1(a)(1) (15
U.S.C. § 1051(a)(1)) requires an applicant who is the owner
of a trademark used in commerce to file “such number of
specimens or facsimiles of the mark as used as may be
required by the Director.” For goods, a “mark shall be
deemed to be in use in commerce … [when] it is placed in
any manner on the goods or their containers or the displays
associated therewith or on the tags or labels affixed
thereto … [and] the goods are sold or transported in
commerce.” Section 45, 15 U.S.C. § 1127. The Office
currently requires the submission of one specimen with use-
based applications (37 CFR § 2.56(a)) and it defines a
trademark specimen as “a label, tag, or container for the
goods, or a display associated with the goods.” 37 CFR
§ 2.56(b)(1).
Applicant and the examining attorney both discuss the
case of Lands’ End Inc. v. Manbeck, 797 F. Supp. 311, 24
USPQ2d 1314 (E.D. Va. 1992), which illustrates one way an
applicant can comply with the provisions discussed above,
and whether it applies to the case at hand. Applicant
argues that “based on the line of decisions beginning with
Lands’ End in 1992, the Board has consistently held that
images of web pages when used as an electronic display meet
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the specimen requirements as provided for in the TMEP and
the Trademark Rules.” Brief at 13. The examining attorney
argues (Brief at 11) that “despite the existence of any
pictures or ordering information on the webpage, the mark
is not used in a manner that would identify the goods, but
instead appears to identify a retail website called LEADING
EDGE TONERS. Essentially, the mark used on the specimen
identifies services, thereby failing to meet the
fundamental requirement in the Land’s End case that the
mark be associated with the goods.”
The TMEP also sets out factors for examining attorneys
to follow when considering whether catalogs and other
specimens are acceptable:
Accordingly, examining attorneys may accept any
catalog or similar specimen as a display associated
with the goods, provided: (1) it includes a picture of
the relevant goods; (2) it shows the mark sufficiently
near the picture of the goods to associate the mark
with the goods; and (3) it includes the information
necessary to order the goods (e.g., an order form, or
a phone number, mailing address, or e-mail address for
placing orders).

However, the mere inclusion of a phone number,
Internet address and/or mailing address on an
advertisement describing the product is not in itself
sufficient to meet the criteria for a display
associated with the goods. There must be an offer to
accept orders or instructions on how to place an
order. In re MediaShare Corp., 43 USPQ2d 1304 (TTAB
1997) (fact sheet brochures held not to qualify as a
catalog under Lands’ End, where the specimen failed to
show the mark near a picture of the goods, and
included no information as to how to order the goods).
Ser. Nos. 77027094, 77027097, and 77027099

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It is not necessary that the specimen list the price
of the goods.

TMEP § 904.03(h) (5th ed. rev. September 2007).3

The TMEP also addresses the question of whether
electronic displays function as a trademark:
A website page that displays a product, and provides a
means of ordering the product, can constitute a
“display associated with the goods,” as long as the
mark appears on the web page in a manner in which the
mark is associated with the goods, and the web page
provides a means for ordering the goods. The
Trademark Trial and Appeal Board has held that web
pages that display goods and their trademarks and
provide for online ordering of such goods are, in
fact, electronic displays which are associated with
the goods. Such uses are not merely advertising,
because in addition to showing the goods, they provide
a link for ordering the goods. In effect, the website
is an electronic retail store, and the web page is a
shelf-talker or banner which encourages the consumer
to buy the product. A consumer using the link on the
web page to purchase the goods is the equivalent of a
consumer seeing a shelf-talker and taking the item to
the cashier in a store to purchase it. The web page
is thus a point of sale display by which an actual
sale is made. In re Dell Inc., 71 USPQ2d 1725 (TTAB
2004)…

The mark must also be displayed on the webpage in a
manner in which customers will easily recognize it is
a mark. In re Morganroth, 208 USPQ 284 (TTAB 1980).
In [In re Osterberg, 84 USPQ2d 1220 (TTAB 2007)], the
Board found that CONDOMTOY CONDOM was not displayed so
prominently that consumers would recognize it as a
trademark for condoms.

TMEP § 904.03(i).

3 In its Reply Brief (p. 6), applicant acknowledged the recent
change to the TMEP.
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Applicant maintains that “the Examining Attorney’s
Appeal Brief concedes that the substitute specimen includes
a picture of the relevant goods, and includes the necessary
ordering information, but argues that the mark does not
identify the goods.” Reply Brief at 6. Thus, the question
under Lands’ End is whether the mark is used in such a
manner as to associate the marks with the goods.
We first look at whether the use of the term in the
web address is a trademark for the goods. The address is:
http://www.leadingedgetoners.com/product.php?productid+7110
1&cat+218&page+1.4 Applicant argues that just “because the
owner of a mark uses its trademark as part of the URL does
not create a rigid rule that always leads to the conclusion
that the mark used as part of a URL must identify only on-
line sales services and not the goods sold on that
website.” Reply Brief at 8.
Internet addresses, even when used separately from a
website, do not necessarily show service mark use much less
trademark use for goods sold on the website. In re
Eilberg, 49 USPQ2d 1955, 1956 (TTAB 1998) (“In other words,
the asserted mark WWW.EILBERG.COM merely indicates the
location on the Internet where applicant’s Web site

4 There are similar addresses in the ‘097 and ‘099 applications.
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appears. It does not separately identify applicant's legal
services as such”).
Like a street address or telephone number, every
domain name serves the purely technological function
of locating a Web site in cyberspace. However, a
domain name does not become a trademark or service
mark unless it is also used to identify and
distinguish the source of goods or services. Out of
the millions of domain names, probably only a small
percentage also play the role of a trademark or
service mark.

McCarthy on Trademarks and Unfair Competition, § 7.17.1
(2007) (footnotes omitted).
Here, applicant’s use of the term LEADING EDGE TONERS
as part of the internet address, www.leadingedgetoners.com,
similarly identifies the website where applicant conducts
its retail sales services. Obviously, a website can be
used for multiple purposes and the simple fact that a term
is used as part of the internet address does not mean that
it is a trademark for the goods sold on the website.
Applicant also uses the term LEADING EDGE TONERS in
several locations as part of the following phrases:
1. Bar at the top of web page:
Leading Edge Toners Best Prices for Tektronix Toners
and Xerox Ink Xerox/Tektronix Phaser 560P

2. Left upper corner:
LEADING EDGE TONERS™
The Price Leader for Xerox/Tektronix Toner

3. Center of page:
Leading Edge Toners Best Prices for Tektronix Toners
and Xerox Ink
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The examining attorney argues that each of these uses of
the mark on the specimen “appears to merely indicate the
name of the applicant’s on-line services.” Brief at 12.
Applicant maintains that “the substitute specimen with the
mark ‘LEADING EDGE TONERS’ in the upper left corner also
includes a picture of the goods, and it is submitted that
the mark and the picture of the goods are in sufficiently
close proximity to allow one to easily associate the mark
with the goods.” Reply Brief at 10.
We must look at the substitute specimen to determine
whether applicant’s term is used as a trademark to identify
its identified goods. Compare Dell, 71 USPQ2d at 1729
(Mark was only listed as the fifth feature in the sentence:
“QUIETCASE™ acoustic environment provides easy access to
the system interior and supports tool-less upgrades and
maintenance of key internal components.” The board
determined that “QUIETCASE is sufficiently prominent that
consumers will recognize it as a trademark”) with
Osterberg, 83 USPQ2d at 1223 (“Unlike the mark in the Dell
case where the mark at issue was set out from the
surrounding text as the first word in a bullet list,
CondomToy condom is not so prominent that consumers will
recognize it as a trademark for condoms”). The fact that
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the term may serve as a service mark to identify retail or
online store services does not necessarily show that the
term is also a trademark for applicant’s goods.
Here, we note that the term LEADING EDGE TONERS is
used in phrases where other trademarks, which appear to be
owned by third parties, are used to identify the toners and
other goods.
Leading Edge Toners Best Prices for Tektronix Toners
and Xerox Ink Xerox/Tektronix Phaser 560P

LEADING EDGE TONERS™
The Price Leader for Xerox/Tektronix Toner

Leading Edge Toners Best Prices for Tektronix Toners
and Xerox Ink

The specimen refers to “Xerox/Tektronix Toner” and
“Tektronix Toners.” However, applicant argues that:
Applicant is an authorized distributor of Media
Sciences products. It offers low price on many
printer supplies including toner cartridges and offers
the convenience of purchasing various printer supplies
compatible with many different brand name printers
from a single source. Furthermore, some manufacturers
such as Media Sciences do not sell cartridges directly
to consumers. Only authorized distributors such as
Applicant make the toner cartridges available to the
consumers for purchase.

Reply Brief at 13. See also ‘097 Reply Brief at 14
(“Applicant is an authorized distributor of Media Sciences
products”) and ‘099 Reply Brief at 13 (“Applicant is a
reseller of Konica/Minolta products”).
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The ‘094 application has a picture of what looks like
a toner cartridge with the phrase “Phaser 560/740 Media
Sciences Compatible Black High-Capacity Toner” above the
picture. Off to the side of the picture is the phrase
“Black High-Capacity Toner Cartridge, works with PHASER 560
and PHASER 740. COMPATIBLE with Tektronix part number…”
The ‘097 application has a picture of a stack of packages.
Above the packages is the phrase “Phaser 8400 Media
Sciences Compatible Value Bundle.” Off to the side of the
picture is the phrase: “The value bundle contains these
Media Sciences compatible ink sticks.” The ‘099
application has a picture, apparently of a drum kit, with
the phrase “Minolta-OMS 2300 Drum Kit” above the picture
and the phrase “Drum Kit for Minolta-QMS…” to the side of
the picture.
A retailer that sells the goods of others does not
necessarily have a trademark for those goods. Applicant
relies on the case of Power Test Petroleum Distributors,
Inc. v. Calcu Gas, Inc., 754 F.2d 91, 225 USPQ 368 (2d Cir.
1985). Unlike this ex parte trademark appeal, that case
involved a preliminary injunction in an antitrust case
where the defendant alleged that the trademark it licensed
was an illegal tying arrangement. The Court pointed out
that the “manufacturer-purchaser distinction is not
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controlling… This says that a trademark owner may affix his
trademark to a product manufactured for him, or that the
product need not be one he manufactures.” 225 USPQ at 373.
More specifically, Power Test involved a distributor who
purchased gasoline from various sources and petroleum-
related products and distributed them to its franchised
service stations with its trademark. The case certainly
confirms that a distributor may use its own trademark on
the goods that it distributes. In re Los Angeles Police
Revolver and Athletic Club Inc., 69 USPQ2d 1630, 1634 (TTAB
2003) (“[T]he mere fact that applicant is the distributor
of goods is not necessarily fatal to its claim of ownership
of the mark”).
Furthermore, it is not disputed that a product may
contain more than one trademark, including a trademark of
the distributor as well as the manufacturer. Safe-T
Pacific Company v. Nabisco, Inc., 204 USPQ 307, 315 (TTAB
1979 (“The principle can be extended one step further to
allow the inclusion on the product of the distributor's
trademark and trade name along with the manufacturer's
trademark so long as the effect thereof upon customers and
prospective customers is not to confuse them as to the
source of the goods or to obliterate the distinction
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between the distributor and the manufacturer which is
necessary to give validity and vitality to this concept”).
However, the question in this case is whether
applicant’s use of the term on its website functions as a
trademark for the goods it sells on that site. There is no
refusal in this case involving whether applicant’s term
functions as a service mark for its retail services because
there are no services listed in these applications. The
mere fact that applicant is a retailer selling products of
others does not by itself establish that applicant’s mark,
which may function as its trade name or service mark,
necessarily also functions as a trademark for the goods
applicant sells. See Vornado Inc. v. Oshkosh B'Gosh, Inc.,
169 USPQ 500, 501 (TTAB 1971) (citation omitted):
A mark or name identifying retail department store
services identifies, in effect, the establishment or
stores of the owner of such mark or name. In the
particular case “TWO GUYS” identifies opposer's
discount stores but it does not identify the goods
purchased in the stores of opposer. Certainly a
merchant can use a mark to identify goods as
originating with him. There is no proof, however,
that opposer applies “TWO GUYS” as a mark to identify
any goods.

At this point, it may be important to step back and
consider the statutory framework within which we operate.
Congress has specifically provided for the registration of
several types of marks. In this case, we are concerned
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with two of them, trademarks and service marks. A
“trademark” is used by a person “to identify and
distinguish his or her goods, including a unique product,
from those manufactured or sold by others and to indicate
the source of the goods, even if that source is unknown.”
15 U.S.C. § 1127. A “service mark” is used by a person “to
identify and distinguish the services of one person,
including a unique service, from the services of others and
to indicate the source of the services, even if that source
is unknown.” Id.5 Congress has also required that an
applicant, in most cases, provide specimens of its use of
the mark in commerce prior to registration. For goods, the
mark is used in commerce when it is “placed in any manner
on the goods or their containers or the displays associated
therewith or on the tags or labels affixed thereto.” Id.
For services, a mark is used in commerce “when it is used
or displayed in the sale or advertising of services and the
services are rendered in commerce.” Id.
Congress has specifically recognized the difference
between trademarks and service marks. A mark may serve
both as a trademark and service mark (or a trade name).

5 For the sake of completeness, we add that a trademark or
service mark includes “any word, name, symbol, or device, and any
combination thereof” and, of course, it includes trademarks or
service marks for which a person has a bona fide intention to use
the mark in commerce. 15 U.S.C. § 1127.
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While we agree with applicant that there are no rigid rules
that would require that use of a term in various locations
on specimens results in the use not being trademark use, on
the other hand, there is no per se rule that any use of a
mark on a website is trademark use for all goods sold on
that web page. The specimens in cases such as Lands’ End
and Dell displayed a purse that consumers would identify by
the trademark KETCH and a computer system with an internal
case that was identified by the trademark QUIETCASE. Even
the specimens in the recent case of In re Valenite Inc., 84
USPQ2d 1346 (TTAB 2007) provided customers a means of
“ordering of VALPRO systems and components requir[ing]
careful calculation and technical knowledge.” 84 USPQ2d at
1348. Valenite did not involve a distributor of the
products of others that was claiming trademark use based on
a display of those goods on its website. More importantly,
the term VALPRO in Valenite pointed to the applicant’s
goods. In this case, applicant’s LEADING EDGE TONERS
points to applicant being a distributor of goods of other
parties and/or the services of distributing those goods,
e.g., “Leading Edge Toners Best Prices for Tektronix
Toners” and “The Price Leader for Xerox/Tektronix Toner.”
We do not see anything in Lands’ End, Dell, or even
Valenite that indicates that the distinction between goods
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22
and services has been breached. The USPTO has long
recognized such a distinction and it has registered terms
based on what the evidence showed the goods or services
were.
Starting in about 1958, the Patent and Trademark
Office began granting service mark registrations to
retailers of merchandise for services such as “retail
grocery store services,” “retail department store
services,” and the like. This policy is now
officially recognized in the Trademark Manual of
Examining Procedure, which states that: “[A]t one
time the activities of grocery stores, department
stores, and similar retail stores were not considered
to be services. However, it is now recognized that
gathering various products together, making a place
available for purchasers to select goods, and
providing any other necessary means for consummating
purchases constitutes the performance of a service."
Marks, which identify such services, are registerable
as service marks. Problems as to whether such a
service is merely ancillary to the sale of goods or to
another service are discussed elsewhere in this
treatise.

McCarthy on Trademarks and Unfair Competition 16:47 (2007).
The board has held that:
It is a matter of common knowledge that retail
department store services encompass the sale of
clothing including men's and boys’ slacks but it is
also a matter of common knowledge that goods sold in
department stores are more frequently than not
identified by the trademarks of the producers of the
merchandise.

Vornado, 169 USPQ at 501.
Retail stores can sell products under their own brand
name that is the same as the store’s name or they can sell
goods produced by others. The names of these stores
Ser. Nos. 77027094, 77027097, and 77027099

23
normally identify the “discount stores but it does not
identify the goods purchased in the stores of opposer.”
Id. However, if a retail store also uses the name of the
store on the goods themselves, the same mark can serve both
a trademark and service mark function. Giant Food Inc. v.
Rosso and Mastracco, Inc., 218 USPQ 521, 524 (TTAB 1982)
(“The word ‘GIANT’ appears on several hundred products
marketed in opposer's stores”). The mere fact that the
name of a store appears on the sign outside or inside the
store does not convert the service mark into a trademark
for all the goods that are sold in those stores. In the
same way, even if applicant is an authorized distributor of
others’ toner cartridges, this fact does not make
applicant’s service mark into a trademark for the
manufacturers’ goods.
The fact that applicant displays its mark on a website
instead of on the outside or inside of the store does not
mean that it is more likely to serve as a trademark for the
goods sold on the site. We must look to the perception of
the ordinary customer to determine whether the term
functions as a trademark. In re Bailey Meter Co., 128 USPQ
292, 293 (TTAB 1961) (“It is well established, however,
that a package, like a configuration of an article or dress
of the goods, cannot be registered, even on the
Ser. Nos. 77027094, 77027097, and 77027099

24
Supplemental Register, unless the adoption thereof results
from an intention primarily to indicate origin of the goods
rather than from considerations of utility and function,
and it is of such nature that the ordinary purchaser would
be likely to regard it as indicating such origin”). See
also In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227,
229 (CCPA 1960) (“Before there can be registrability, there
must be a trademark (or a service mark) and, unless words
have been so used, they cannot qualify for registration”)
and Morganroth, 208 USPQ at 288 (“This necessitates a
determination as to whether it is used and provided in such
a manner so as both to make it known to purchasers and to
have such individuals associate it with the goods as an
identification symbol”).
Looking at all the multiple uses of the term LEADING
EDGE TONERS on the specimens, including the original
specimens, and considering them individually and their
entire impression, we cannot conclude that purchasers would
understand that the term LEADING EDGE TONERS is used as a
trademark for the goods identified in the three
applications. Rather, the uses point to the fact that
Leading Edge Toners is a retail/distributor of toner and
similar products of others. Therefore, we agree with the
examining attorney that the term does not function as a
Ser. Nos. 77027094, 77027097, and 77027099

25
trademark for the goods in the subject applications. The
term fails to associate the mark with the goods as required
by Lands’ End.
Decision: The examining attorney’s refusals to
register the term LEADING EDGE TONERS in Serial Nos.
77027094, 77027097, and 77027099 on the ground that it is
used as a trade name and that the specimens fail to show
that the mark is used as a trademark for the identified
goods are affirmed.